Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
This is a response to the amendment filed 10/16/2025. Claim 1 has been canceled. Claims 2-13 have been amended. Claims 14 and 15 have been added. Claims 13 and 15 are withdrawn to a non-elected embodiment.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant argues Heffelfinger (US 3,627,579) teaches away from monoaxially stretching by teaching the drawbacks of monoaxial stretching. Examiner respectfully disagrees. Although the Applicant is correct that Heffelfinger acknowledges transverse stretching/orientation is known to reduce fibrillation, it also indicates this transverse stretching compromises properties in the principal direction by disturbing crystalline alignment (See col. 6, line 61 to col. 7, line 3). Heffelfinger indicates some prior art used a minor transverse stretch to assuage this disadvantage, but their invention can produce perfect parallel crystalline alignment and a transversely tough film solely by monoaxially stretching the machine direction without the need for even minor transverse stretching that disrupts parallel crystalline alignment (See col. 7, lines 3-10 and col. 8, lines 55-75, teaching they achieve transverse toughness without even small transverse stretching and teach one direction stretching in the example under specific conditions to maintain parallel alignment but also transverse toughness). Thus, although Applicant is correct that Heffelfinger indicates problems of monoaxial stretching that have been overcome by biaxial stretching, the entire purpose of Heffelfinger is to create a monoaxial stretching process that is suitable so as to not introduce the disadvantages of a biaxial stretch.
Applicant argues Lange et al. (US 2016/0355707) tears earlier in the machine direction and thus uses MOPP as opposed to biaxial PET. Lange et al. states the main deficiency of PET is that it tears earlier in the machine direction (See page 2, paragraph [0031]) while Heffelfinger specifically teaches avoiding transverse stretching that is typically used to avoid fibrillating while maintaining traverse toughness and perfect parallel alignment that increase MD tensile strength (See col. 6, line 61 to col. 7, line 10). Lange et al. thus details that exact same issue detailed in Heffelfinger that results when parallel crystalline alignment is compromised (i.e. compromised properties in the MD), wherein the entire purpose of Heffelfinger to overcome this issue. Despite Applicant’s claims, Lange et al. never indicates monoaxially stretched PET is unsuitable for their strapping applications and the fact they use another monoaxially stretched material is irrelevant as long as there is motivation to use monoaxially stretched PET. Note the film in Heffelfinger is taught as suitable for strapping tapes (See col. 12, line 12) and Lange et al. merely lays out a known use for strapping tapes.
Applicant further argues Heffelfinger teaches high elongation at break in the transverse direction. Although this may be true, Applicant does not claim the elongation at break in the transverse direction, and in fact the low elongation at break is envisioned for the machine direction (See instant PgPub US2024/0010876, page 7, paragraph [0176]). This is exactly the same characteristics desired in Heffelfinger, which explicitly desires “low elongation under load” in the machine direction (See col. 8, lines 25-29). Thus, Heffelfinger explicitly teaches a film suitable for strapping tapes and possessing all the relevant properties desired for strapping tapes utilized in strapping devices with moving parts. Thus, it certainly would appear obvious to utilize the film known to be suitable for strapping applications for strapping applications for which it appears to be suitable. As such, the rejection is not overcome. The additional claims now dependent on the independent claim and the added claims are addressed in more detail below in response to the amendments.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 4 as originally filed recited the film had an ultimate tensile strength at a thickness of 36 microns of between 120 and 167 N/cm, an elongation at break of 20% to 40%, and/or a modulus of elasticity of between 8000 and 10000 MPa, but none of these appear in the description and Applicant should add it to provide antecedent basis in the description for Claims 6 and 14.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 13 and 14 recite the elongation at break of the adhesive tape. There is no support for this. The instant examples, and claim 6, measure the elongation at break of the films. Examiner assumes Applicant means the film for the purposes of examination.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heffelfinger (US 3627579) in view of Lange et al. (US 2016/0355707).
Regarding Claims 2, 3 and 12, Heffelfinger teaches a fixing adhesive tape with a carrier made of a monoaxially oriented polyethylene terephthalate (PET) film (See Abstract and col. 5, line 70 to col. 6, line 8 and col. 6, line 61 to col. 7, line 10, and col. 8, lines 55-75, wherein a 100% PET film is unidirectionally stretched, specifically in one direction in Example 1, to create a “parallel alignment of crystallites” in a process overcoming the need for transverse stretching, thus clearly teaching a monoaxially oriented PET film, and specifically 4-5.5, i.e. Fig. 6, or up to 6X in the longitudinal direction, i.e. the direction of movement, that being 1:4 to 1:6 as claimed) with an adhesive applied to at least one side thereof (See col. 2, lines 6-10).
Heffelfinger teaches the PET tape therein has high dimensional stability, high tensile strength, and high tear resistance (See col. 7, lines 61-74) with freely controllable properties for desired application of the film (See col. 8, lines 25-39). Heffelfinger further teaches it is useful as a strapping tape or bands (See col. 12, lines 12), but is silent as the specific strapping applications, and thus does not the PET tape to attach to moving parts in a product selected from printers, copiers, domestic appliances and furniture.
However, Lange et al teaches that it was known at the time the invention to utilize an adhesive strapping tape having high tear resistance and strength to secure moving parts of household appliances and furniture therein (See page 1, paragraphs [0004]-[0011] and [0015]-[0016] and page 2, paragraphs [0028]-[0031]). Heffelfinger teaches the unidirectional oriented PET therein provides higher tensile strength in the MD than transversely stretched PET (See col. 7, lines 1-10 and col. 8, lines 3-5) while remaining non-fibrillating and tear resistant (See col. 7, lines 61-74), and explicitly identifies it as suitable for adhesive and strapping tapes (See col. 5, lines 8-12). It would have been obvious for a person having ordinary skill in the art at the time of invention to use the PET film in Heffelfinger as the carrier in Lange for the specific strapping application of securing moving part of printers, etc. as claimed. The carrier in Heffelfinger is already described as suitable for strapping applications and would have predictably provided a split-resistant PET carrier without known weakness in the machine direction. Obviousness does not require absolute predictability and one would have reasonably expected that the monoaxially, longitudinally stretched and oriented films of Heffelfinger would have been useful for moving parts of a household appliance or furniture and use of the film with an appropriate adhesive to secure such moving parts would have been obvious to one of ordinary skill in the art at the time of invention.
Regarding Claim 5, Heffelfinger teaches the PET film as 0.24-1.78 mils, i.e. 6-45 microns, in thickness (See col. 7, lines 11-15).
Regarding Claim 6, Heffelfinger teaches a modulus, i.e. modulus of elasticity, of 460,000-1,800,000 psi, i.e. 3,170-12,400 MPa, (See col. 3, lines col. 2, line 70 to col. 3, line 3) and a tensile strength of at least 50,000 psi (See col. 8, lines 3-5, and note 50,000 psi is 345 MPa, i.e. 34,500 N/cm2, multiplied by 36 microns, i.e. 0.0036 cm, is 124.2 N/cm), each freely controllable by stretching and relaxation (See col. 8, lines 25-30), and thus easily optimized to consumer standards.
Regarding Claims 7-11, Heffelfinger teaches only generic adhesives and implies the adhesive should have been suitable for the use of the film (See col. 2, lines 6-10). Thus, when using strapping applications, such as securing moving parts of printer, copies, appliances, and furniture, it would have been obvious to utilize adhesives known to have been suitable for this purpose. For such adhesives, Lange teaches the adhesive applied on the carrier at 20-40 g/m2, made of acrylate or rubber adhesive (See page 2, paragraph [0026] and page 3, paragraph [0053]-[0054]), including tackifiers such as hydrocarbon resins, terpene esters, and rosin esters (See page 3, paragraph [0058] and page 4, paragraph [0064]-[0067]), aging stabilizer or other additives (See page 3, paragraph [0051] and page 4, paragraph [0070]), and isocyanate-based primer (See page 3, paragraphs [0048]-[0049]). As such, all of these would have predictably been useful and thus obvious to a person having ordinary skill in the art utilize as the adhesive for strapping tapes for moving parts due to their known suitable for this specific strapping application.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heffelfinger and Lange et al. as applied to Claim 12, and further evidenced by and/or in view of Vogt et al. (US 6,589,463).
Regarding Claim 14, Heffelfinger and Lange et al. teaches the method of Claim 12 as described above. Heffelfinger further teaches stretching and relaxation can curate film properties and that high stiffness and low elongation under load is a design goal (See col. 8, lines 25-39) and teaches stretching 4X to 5.5X (See Fig 6) and heating setting at 150 C to heat set (See col. 7, lines 46-60, col. 8, lines 18-24, and col. 9, lines 1-4), but is silent as to elongation at break as a property in the machine direction. However, under the conditions taught in Heffelfinger for stretching in the MD, it is known elongation at break in the MD within the claimed ranges will occur (See, for example Vogt et al., col. 5, line 5 to col. 6, line 33 and Table I, indicating similar unidirectional heating and stretching conditions produce MD elongation at break of around 25% for 4-5.5X stretching) and elongation at break is controllable via stretching conditions and desirable low in strapping applications (See Lange, page 1, paragraphs [0015]-[0016]). Thus, while the conditions under which the film in Heffelfinger is stretched suggest elongation at break percentages as claimed are likely, it at least would have been obvious to a person having ordinary skill in the art at the time of invention to adapt stretching to arrive at an elongation at break as is desired, such as 25%, since such low values are known to be desirable in strapping and easily achievable in similar PET films by the stretching method of Heffelfinger.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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